ADMINISTRATIVE PANEL DECISION

MetaQuotes Software Corp. v. Name Administration Inc. (BVI)

Case No. D2012-1475

1. The Parties

The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <metatrader.com> is registered with iRegistry Corp. (fka) Domain Name Sales Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2012. On July 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 28, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2012. The Response was filed with the Center on August 15, 2012.

The Center appointed Assen Alexiev, Alistair Payne and Tony Willoughby as panelists in this matter on September 14, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 4, 2012, the Complainant filed a supplementary submission to the Center. This submission was followed by a reply filed by the Respondent on September 20, 2012. The Panel notes that the Rules contain no express provision for supplementary filings by either party, except in response to a deficiency notification or if requested by the Center or by the Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplementary filings (including further statements or documents) received from either party. Taking this into account, for reasons of due process and equality of treatment of the two parties, and in order to provide both parties with a reasonable opportunity to present their cases, the Panel has determined to consider and admit the two supplementary filings in rendering its decision.

4. Factual Background

The Complainant is a software solutions provider for the financial market. It is a business to business software development company, established in Russia in 2000. It is the owner of the following trademark registrations (the “METATRADER trademark”):

- The trademark METATRADER, applied for on December 30, 2003, and registered on February 8, 2005, for the territory of the Russian Federation, with registration number 281939, for goods and services in International Class 09; and

- The trademark METATRADER, applied for on May 18, 2005, and registered on December 12, 2006, for the territory of the United States of America, with registration number 3,182,784 for goods and services in International Class 9.

The Complainant is also the registrant of the domain names <metatrader4.com> and <metatrader5.com>.

The disputed domain name was registered on March 22, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant offers the METATRADER technology to the financial trading services industry (FOREX, CFDS). It describes itself as the market leader in the financial trading brokerage technology worldwide, providing FOREX trading technology to more than 450 banks and brokers all around the world. The Complainant states that through its efforts in the last decade, it has successfully built its brand image with the use of the METATRADER trademark and has acquired extensive popularity around the world, and the METATRADER brand is directly associated with FOREX trading worldwide.

The Complainant alleges that its METATRADER trademark has gained secondary meaning within the financial industry through extensive sales and advertising over ten years the METATRADER trademark has become an identifier of the Complainant’s products and services.

According to the Complainant, its METATRADER platform is a very popular trading platform used by traders and corporations worldwide for the trading of currencies and CDF instruments. Originally developed as “FX Charts” in 2000, “MetaQuotes” in 2001 and from 2002 as “MetaTrader”, this software was developed as a broker-end trading platform with which FOREX brokers could provide their traders trading access to the FOREX market. It became popular with traders worldwide as it could be run on a standard PC and did not require dedicated and expensive equipment. Following the release of “FX Charts” the Complainant released its second major application revision in 2001; the “MetaQuotes” platform extended the range of instruments which could be traded using the system. In early 2002, the Complainant released its third application revision; the METATRADER platform. This version further expanded the number of financial products with the addition of futures contracts, and expanded the programming language for trading strategies with MQL II. A number of users and third parties started to develop functions and libraries using the new version of the built-in programming language and APIs.

In the Complainant’s submission, with the launch of the METATRADER trading platform the Complainant became known worldwide as a company offering specialized products to the FOREX broker software market. More specifically, the METATRADER platform quickly became popular among many brokers and traders due to the capabilities that the platform offered, which included unlimited charting capabilities, fast performance, a multi-lingual trading interface and access to numerous expert advisors.

The Complainant submits that the disputed domain name is identical to the METATRADER trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is not affiliated to the Complainant and has no, product, service, or trademark associated with the name "Metatrader". The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark of service mark rights in it.

The Complainant admits that at the time the Respondent registered the Disputed Domain Name in March 2003, the Complainant did not have any registered trade mark rights to the name. However, the Complainant had already established a major worldwide presence with “MetaTrader” among traders and brokers. Since 2002, with the release of the “MetaTrader 3” trading platform, the Complainant has enjoyed common law trademark rights to the name.

The Complainant alleges that the Respondent has used the disputed domain name to divert Internet users to a website that includes pay-per-click advertising for third-party websites offering goods and services that relate to the Complainant’s METATRADER technology. The "FOREX" tab on the landing page of the Respondent's website directs Internet visitors to a secondary web page containing sponsored links and related links to websites offering FOREX and related products and services of the Complainant’s competitors. Therefore, the Complainant alleges, the only intent of the Respondent is make money through pay-per-click advertising as the technology trademark "metatrader" gains more popularity within the financial trading services industry.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has registered it for the sole purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. The monetary compensation requested by the Respondent for the transfer of the disputed domain name is in excess of the out of the pocket costs directly related to the disputed domain name’s initial cost.

The Complainant observes that the Respondent regularly registers expired or otherwise available domain names for use with pay-per-click landing pages. The Respondent allegedly does not discharge its obligation under paragraph 2 of the Policy to avoid registering domain names that infringe third-party trademarks, but instead chooses to remain willfully blind regarding whether a domain name is identical or confusingly similar to another's trademark. Such conduct can easily support a finding that the Respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their proprietary marks. A further indication of the Respondent’s bad faith is that the Respondent has engaged in a pattern of this type of behaviour, having been the Respondent in numerous disputes in relation to domain names found to be identical or confusingly similar to other well-known corporate names.

The Complainant argues that the Respondent's failure to undertake reasonable measures to ensure that the registration of the disputed domain name did not violate the rights of the Complainant in the METATRADER trademark, coupled with the Respondent's use of the disputed domain name to generate advertising revenue from pay-per-click links related to the Complainant's trademark, establishes registration and use in bad faith within the meaning of the Policy.

B. Respondent

The Respondent, Name Administration Inc., describes itself as a well-known domain registrant, advertising broker, and member of the ICANN Commercial Business Users Constituency.

It contends that the disputed domain name comprises of the common prefix "meta" and the generic word "trader", and was registered by the Respondent upon its abandonment by a prior registrant. The disputed domain name was immediately put into use in the Respondent's well-documented keyword advertising system due to the attractiveness of the word "trader" and the common prefix "meta". The Respondent believed the disputed domain name would be useful in advertising subject matter relating to a variety of investment and financial trading related subjects. In order to target the disputed domain name for registration upon lapse of its prior term, the Respondent had identified the disputed domain name upon its entry into the "Redemption Grace Period" an ICANN-mandated "cooling" period post-expiration of a domain name, during which the prior registrant is solely entitled to renewal rights.

The Respondent points out that the Complainant has not shown that it has any prior rights in relation to the disputed domain name in connection with financial and commodity trading advertising purposes. Further the Respondent argues that there may be a legitimate interest in a domain name where that domain name incorporates a descriptive term and is used in connection with the subject matter that term describes, where there is no obvious intention to trade on the rights or reputation of a trade mark owner.

The Respondent admits to having used the disputed domain name to advertise subject matter relating to financial, security, and commodity trading. This use was commenced nearly two years prior to the Complainant's earliest trademark registration of record, prior to any application for trademark registration made by the Complainant, and prior to the Complainant's copyright registration in its computer software.

According to the Respondent, the parties have been corresponding since mid-2009 about the disputed domain name, but the Complainant decided not to disclose the parties' pre-dispute correspondence to this Panel. In the course of this correspondence, the Respondent twice drew the Complainant’s attention to the fact that the Complainant’s trademark registration was made years after the registration of the disputed domain name, but received no comment in response. Nevertheless, the Complainant proceeded to file the present Complaint ignoring the issue and omitting the prior correspondence, in the apparent belief that although the Respondent has diligently answered correspondence, the Respondent would somehow fail to present the same point here. Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time, and in many cases cost, and the Policy must not be used unless a complainant has a reasonable and credible belief it is entitled to succeed. The Respondent points out that proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by a complainant.

The Respondent also notes that it has registered and used the disputed domain name for nine years. The Complainant provides no explanation for its delay in bringing this Proceeding, or in its failure of diligence in the conduct of the pre-dispute correspondence. In view of this, it cannot seriously be argued by the Complainant that the disputed domain name has been disrupting its business all the while.

The Respondent further notes that the Complainant does not deny that the Respondent has been requesting evidence of the Complainant’s trademark rights for several years, but to no avail. The Complainant now alleges that the Respondent should have been aware of Internet users’ comments on a forum operated by the Complainant under a name other than “metatrader”. The Complainant has not identified when it has acquired its alleged common law rights, and provides no supporting data in relation to number of users, geographic areas of such users, advertising expenditures, units sold, or any objective data other than comments posted to the Complainant’s own forum by a handful of users. This evidence does not establish the degree, if any, to which the Complainant’s reputation outside of that forum was well known, to the extent that the Respondent should have had notice of it when the disputed domain name was registered. For these reasons, the Respondent submits that the Complainant has failed to establish that it had common law rights at the time the disputed domain name was registered.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the METATRADER trademark, registered in the Russian Federation and in the United States of America. This trademark contains the word element “MetaTrader”.

For the purpose of assessing identity or confusing similarity under the Policy, paragraph 4(a)(i) it is widely acknowledged that the top level gTLD domain suffix may in appropriate circumstances be ignored. In this case the relevant part of the disputed domain name is its “metatrader” section. This element is identical to the word element of the Complainant’s METATRADER trademark. Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant alleges that the Respondent is not affiliated with the Complainant in any way and has no product, service, or trademark associated with the "Metatrader" name. The Respondent has allegedly never been commonly known by the disputed domain name and has never acquired any trademark of service mark rights in it. The Complainant also contends that the Respondent has used the disputed domain name to divert Internet users to a website that includes pay-per-click advertising for third-party websites offering goods and services that relate to the Complainant’s MetaTrader technology, so it is not making a legitimate noncommercial or fair use of the disputed domain name. These allegations may be regarded as sufficient to sustain the required prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

In response to the allegations of the Complainant, the Respondent submits that it registered the disputed domain name upon its abandonment by a prior registrant. Due to the attractiveness of its elements, the word "trader" and the common prefix "meta", which the Respondent believed would be useful in the advertising of matters related to investment and financial trading, the disputed domain name was immediately put to use in the Respondent's keyword advertising system. This activity started nearly two years prior to the Complainant's earliest trademark registration, and prior to the Complainant's copyright registration of its computer software. The Respondent’s position is also that there may be a legitimate interest in a domain name where that domain name represents a descriptive and non-distinctive combination of two words and is used in connection with the subject matter that term describes, and where there is no obvious intention to trade on the rights or reputation of a trademark owner.

After the review of the evidence submitted by both parties, the Panel has reached the conclusion that it is more likely than not that the Respondent was unaware of the existence of the Complainant at the time it registered the disputed domain name and that the Respondent has not sought to target the Complainant. The evidence submitted by the Complainant does not establish that the Respondent knew or should have known of the Complainant before the registration of the METATRADER trademark. According to the Oxford English Dictionary, the prefix “meta“ has its origin in the Greek language and is used in English to denote, inter alia, something of a higher or second-order kind. Therefore, the Panel accepts the contention of the Respondent that the disputed domain name may be regarded as consisting of two descriptive elements - the common prefix "meta" and the word "trader". Taking this into account, along with the lack of any trademark registration (or even any trade mark application) of the Complainant at the time of registration of the disputed domain name, the Panel is of the opinion that the registration and use of the disputed domain name cannot be regarded as illegitimate under the Policy vis-à-vis the Complainant.

Therefore, the Panel finds that the Complainant has not established that the Respondent does not have rights and legitimate interests in the disputed domain name.

The Panel notes that this finding is made solely for the purposes of the present proceeding and within the limits of the Policy. Any trademark infringement dispute between the Parties is beyond the scope of the present proceeding.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Complainant contends that the disputed domain name was registered by the Respondent for the sole purpose of transferring it to the Complainant or to one of its competitors for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name. The Complainant alleges that its METATRADER software platform became widely popular in 2002, and that it has had common law trademark rights in the name “Metatrader” since then. The Complainant also argues that the Respondent's failure to undertake reasonable measures to ensure that the trademark rights of the Complainant are not violated by the registration of the disputed domain name, followed by its use for the generation of advertising revenue from pay-per-click links related to the Complainant's trademark, establishes registration and use in bad faith within the meaning of the Policy.

The Respondent denies that it knew or had a duty to know the Complainant when the disputed domain name was registered, and contends that the registration was made for advertising purposes in view of the descriptive character of the elements of the disputed domain name. The Respondent points out that the disputed domain name was registered before the Complainant had even applied for registration of its trademark and software copyright, and alleges that in such circumstances bad faith cannot be proved, as the Respondent could not have contemplated the Complainant's not-yet-existing right. The Respondent also submits that the Complainant has failed to establish that it had common law trademark rights in any specific jurisdiction at the time the disputed domain name was registered.

The analysis of the evidence in the case file leads the Panel to the conclusion that the Complainant has not established that in the period 2002-2003 the recognition by the public of the Complainant and of its METATRADER trademark was such that would make it likely that the Respondent was, or should have been, aware of the existence of the Complainant at that time. The situation now may be different, but this is not what is relevant here. At the time when the Respondent registered the disputed domain name, the Complainant had neither applied for the METATRADER trademark nor made a copyright registration for its MetaTrader software platform in the Russian Federation. Therefore, and as summarized in paragraph 3.1 of the WIPO Overview 2.0, the Panel finds that the registration of the disputed domain name could not have been in bad faith because the Respondent could not have contemplated the Complainant's then non-existent rights. On this basis the Panel also finds that there is nothing about the circumstances of this case to suggest that the Respondent was willfully blind to the Complainant’s rights when acquiring the disputed domain name. In these circumstances, the engagement of the Respondent in negotiations initiated by the Complainant for the sale of the disputed domain name cannot be regarded as illegitimate either.

For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

Under Paragraph 15 of the Rules, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as, “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

It appears from the Response that when the Complaint in this case was filed (nine years after the registration of the disputed domain name), the Complainant was clearly aware that the Respondent had registered the disputed domain name well before the Complainant had acquired any trademark rights. That fact was expressly drawn to the Complainant’s attention in correspondence between the parties three years ago. Moreover, the Complainant has failed to point to anything that would suggest that any reputation attaching to its mark at the date of registration of the disputed domain name was likely to have been known to the Respondent at that time. It appears to the Panel as if the Complainant persisted in filing these proceedings without regard to these factors, or to its likelihood of success in the case, and in spite of its past interactions with the Respondent. In these circumstances the current Policy proceedings as commenced by the Complainant appear to be little more than a blatant attempt to obtain the disputed domain name at any cost. In addition the Panel notes that the Complainant failed to disclose in the Complaint its pre-Complaint correspondence with the Respondent and did not deny its existence in its supplementary submission, which omission does nothing to reinforce its bona fides.

It appears to the Panel that the Complainant must have known when it filed the Complaint that in these circumstances there was no reasonable chance of success and that it was putting the Respondent to unjustifiable trouble and expense in defending these proceedings.

Taking all this into account, and notwithstanding the fact that the Respondent has not sought such a finding, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.